Eric C. Pai

Partner | Palo Alto

epai@mofo.com | (650) 813-5623

epai@mofo.com
(650) 813-5623

Eric Pai focuses his practice on intellectual property litigation, with particular emphasis on life sciences disputes regarding biotechnology, medical devices, and biologics and pharmaceuticals. He has extensive experience litigating biosimilar patent disputes under the Biologics Price Competition and Innovation Act and pharmaceutical patent disputes under the Hatch-Waxman Act. Eric has also successfully litigated matters involving a wide range of other technologies, including smartphones, GPS systems, wireless telecommunications, software, and semiconductors.

Eric represents world-class companies in complex, high-stakes patent and trade secret litigation in federal and state courts across the country, the International Trade Commission, and U.S. and international arbitration tribunals. He works closely with clients to develop litigation strategies tailored to their business objectives, often prevailing at earlier stages of the dispute through summary judgment or other key rulings that effectively end the other side’s case. He has examined witnesses and presented closing arguments at trial and successfully argued Markman and summary judgment hearings.

Eric has also represented technology and life sciences companies in complex commercial litigation and licensing disputes.

Eric received his J.D. from Yale Law School, where he served on the board of the Yale Law Journal and as editor-in-chief of the Yale Journal on Regulation. He received his B.A. with distinction and honors from Stanford University. He is a member of Phi Beta Kappa.

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Experience

  • Secured a series of victories on behalf of Sandoz Inc. in the first case to interpret the Affordable Care Act’s Biologics Price Competition and Innovation Act (BPCIA). The federal district court ruled in Sandoz’s favor on all issues before the court, adopting Sandoz’s interpretation of the BPCIA in all respects. The court also denied Amgen’s motions urging a contrary interpretation and seeking a preliminary injunction. The Supreme Court ruled in Sandoz’s favor on appeal. In further litigation on the asserted patents, the district court adopted Sandoz’s claim constructions on Amgen’s method of treatment patent, which resulted in Amgen stipulating to noninfringement of that patent. The court then granted Sandoz’s motion for summary judgment of noninfringement on the remaining patent directed to purification of proteins expressed using recombinant DNA technology. The Federal Circuit affirmed Sandoz’s victory on both patents.

  • Represented the world’s largest maker of DNA sequencing systems, Applied Biosystems (AB), against one of its biggest competitors, Illumina, seeking a declaratory judgment that AB’s newest DNA sequencing system did not infringe patents held by Illumina and that the patents were invalid. The patents involved biotechnology, electronics, and software elements. AB prevailed on a key summary judgment ruling of noninfringement on one of the four asserted claims. During trial, AB eliminated one other claim as invalid and another as not infringed. After a three-week trial, the jury agreed that AB’s probes did not infringe the remaining claim. All rulings were affirmed on appeal.

  • Won a preliminary injunction on behalf of medical device company Nevro, protecting its high-frequency spinal cord stimulation technology against infringement by competitor Stimwave. This victory resulted in a settlement of the remaining litigation under which Stimwave agreed to be bound by a permanent injunction.

  • Representing Nevro in patent infringement litigation regarding spinal cord stimulation technology against competitor Boston Scientific.

  • Represented APP Pharmaceuticals in Hatch-Waxman litigation relating to bivalirudin drug product. Case settled on favorable terms.

  • Represented CoMentis in patent infringement action involving Alzheimer’s drug development tools. Successfully obtained dismissal of all claims for lack of standing.

  • Represented Hemisphere GPS in defending against patent infringement claims involving GPS technology used in agriculture. Trimble sought over $50 million in damages. Hemisphere won summary judgment of noninfringement on all asserted claims. As a result of this victory, only Hemisphere’s counterclaims for invalidity and inequitable conduct remained, and the case settled on favorable terms shortly before trial.

  • Represented Altera in patent infringement action relating to field programmable gate arrays. Case settled on favorable terms.

  • Represented a Japanese electronics manufacturer in complex multi-phase arbitration relating to wireless telecommunications and standards-essential patents.

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